You are on page 1of 19

Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 1 of 19

1
2
3
4
5
6
7
8 UNITED STATES DISTRICT COURT

9 WESTERN DISTRICT OF WASHINGTON


10 AT SEATTLE

11 MICROSOFT CORPORATION,
a Washington Corporation,
12
Plaintiff,
13 Case No. 10-CV-00653-RSM
v.
14 FIRST AMENDED COMPLAINT FOR
AMISH P. SHAH, an individual, JOSE A. DAMAGES AND EQUITABLE RELIEF
15 RIVERA, a/k/a JAY STYLES, an
individual, DIGISPACE SOLUTIONS
16 LLC, a California Limited Liability
Company, YMULTIMEDIA LLC, a
17 California Limited Liability Company, and
DOES 1-50,
18
Defendants.
19
20 Plaintiff Microsoft Corporation (“Microsoft”) brings this action against DEFENDANTS

21 AMISH P. SHAH, JOSE A. RIVERA a/k/a JAY STYLES, DIGISPACE SOLUTIONS LLC,

22 YMULTIMEDIA LLC (collectively hereinafter, the “Named Defendants”), and DOES 1-50

23 (each a “Doe Defendant” and collectively, “Doe Defendants”) (Named Defendants and Doe

24 Defendants collectivey “Defendants”), and alleges as follows:

25 I. JURISDICTION AND VENUE

26 1. This is a complaint for an injunction, damages and other appropriate relief to stop

27 Defendants from violating Microsoft’s trademark and service mark rights by registering one or

28 more Internet domain names that are identical or confusingly similar to Microsoft’s trademarks
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 2 of 19

1 and service marks, and by using such domain name(s) in bad faith to profit from Microsoft’s

2 marks. In this action, Microsoft alleges: (1) Violations of the Anti-Cybersquatting Consumer

3 Protection Act, 15 U.S.C. § 1125(d); (2) Trademark Infringement, 15 U.S.C. § 1114; (3) False

4 Designation of Origin, 15 U.S.C. § 1125(a); (4) Trademark Dilution, 15 U.S.C. § 1125(c);

5 (5) Unfair Business Practices, RCW § 19.86 et seq.; (6) Unfair Competition under Washington

6 common law; and (7) Unjust Enrichment under Washington common law.

7 2. This Court has subject matter jurisdiction over Microsoft’s claims pursuant to

8 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338.

9 3. This Court has personal jurisdiction over Defendants, who have engaged in
10 business activities in and directed to this district and have committed a tortious act within this

11 district.

12 4. Venue is proper in this Court pursuant to 28 U.S.C. § 1391 because a substantial

13 part of the events or omissions giving rise to Microsoft’s claims occurred in this judicial district.

14 II. THE PARTIES

15 5. Plaintiff Microsoft is a Washington corporation with its principal place of

16 business in Redmond, WA.

17 6. On information and belief, Defendant Amish P. Shah is an individual residing at

18 12 McMartin Ct 7N, Jersey City, NJ 07305 and/or 2323 Broadway Ste 202, San Diego,

19 California 92102. On further information and belief, Defendant Amish P. Shah registered, uses,
20 owns or co-owns one or more Infringing Domain Names (see infra, Paragraph 25) and/or

21 otherwise infringed one or more Microsoft trademarks or service marks, jointly and/or severally,

22 and directly, contributorily, and/or vicariously.

23 7. On information and belief, Defendant Jose A. Rivera, also known as Jay Styles, is

24 an individual residing at 1049 Laguna Seca Loop, Chula Vista, California 91915. On further

25 information and belief, Defendant Jose A. Rivera registered, uses, owns or co-owns one or more

26 Infringing Domain Names and/or otherwise infringed one or more Microsoft trademarks or

27 service marks, jointly and/or severally, and directly, contributorily, and/or vicariously.

28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 2 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 3 of 19

1 8. On information and belief, Defendant Digispace Solutions LLC is a limited

2 liability company organized under the laws of California, with a principal place of business at

3 1080 Park Blvd Suite 1805, San Diego, California 92101, and for whom Amish Shah serves as

4 founder and Chief Executive Officer. On further information and belief, Defendant Digispace

5 Solutions LLC registered, uses, owns or co-owns one or more Infringing Domain Names and/or

6 otherwise infringed one or more Microsoft trademarks or service marks, jointly and/or severally,

7 and directly, contributorily, and/or vicariously.

8 9. On information and belief, Defendant yMultimedia LLC is a limited liability

9 company organized under the laws of California, with a principal place of business at
10 1041 Market Street #191, San Diego, California 92101. On further information and belief,

11 Defendant yMultimedia LLC was founded by Amish Shah and Jose Rivera as a division of

12 Defendant Digispace Solutions LLC. On further information and belief, Defendant

13 yMultimedia LLC registered, uses, owns or co-owns one or more Infringing Domain Names

14 and/or otherwise infringed one or more Microsoft trademarks or service marks, jointly and/or

15 severally, and directly, contributorily, and/or vicariously.

16 10. Microsoft is unaware of the true names and capacities of the Defendants sued

17 herein as Does 1 through 50, but alleges on information and belief that each of them is in some

18 way responsible for the wrongs alleged herein. Microsoft will amend this complaint to plead

19 their true names and capacities when ascertained.


20 11. Microsoft is informed and believes, and thereupon alleges, that each of the Named

21 Defendants is, and at all times mentioned herein was, the agent of each of the other Named

22 Defendants in that at all time herein mentioned each of the Named Defendants was authorized

23 and empowered by each of the other Named Defendants to act, and did act, as the principal or

24 agent of each of the other Named Defendants. Microsoft further alleges that each and every

25 allegation regarding Named Defendants contained herein was done by each Named Defendant in

26 the course and scope of said agency and in the capacity of and as principal or agent for, each of

27 the other Named Defendants and with the permission and consent of each Named Defendant.

28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 3 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 4 of 19

1 III. MICROSOFT’S BUSINESS AND TRADEMARKS

2 12. Microsoft is a world leader in the development of software and related products

3 for a wide variety of personal, business, government, and academic uses. Microsoft offers a

4 broad range of products and services, including, but not limited to, computer software such as the

5 Microsoft Windows operating system and Microsoft Office and Internet and electronic mail

6 services such as MSN and Windows Live services, to name a few. Microsoft’s software

7 products include instant messenger programs such as MSN Messenger, Windows Live

8 Messenger, and Windows Messenger.

9 13. Microsoft owns registrations for a number of trademarks and service marks that it
10 uses to identify its products and services in the marketplace. Among the marks owned by

11 Microsoft are the following registered marks (collectively the “Microsoft Marks”): MSN® and

12 WINDOWS®. Microsoft has spent millions of dollars promoting the goods and services under

13 the Microsoft Marks, and millions of people are using the goods and services associated with

14 those marks.

15 14. Since at least March 7, 1995, Microsoft has used in commerce the trademark and

16 service mark MSN® to promote computer hardware and software products as well as for a broad

17 array of on-line information and electronic communication services.

18 15. Microsoft owns the following United States Trademark Registrations for its MSN

19 mark in connection with the following goods and services, which as listed below reflect any
20 updates made through statutory maintenance filings:

21
22 Reg. No. Reg. Date Goods and Services

23
2,153,763 4/28/1998 Computer programs for transmitting and receiving electronic mail,
24 text graphics, audio, video and other data from a remote computer
network and for accessing global communications networks;
25 computer programs for accessing interactive games and on-line
shopping services; computer programs for accessing information in a
26
wide variety of fields including news, entertainment, music, travel,
27 investments, sports, computers, parenting, and general reference
information.
28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 4 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 5 of 19

1
Reg. No. Reg. Date Goods and Services
2
3 2,191,997 9/29/1998 Providing information concerning travel and travel-related subjects
over computer networks and global communication networks;
4 providing information concerning motor vehicles over computer
networks and global communication networks.
5
2,191,998 9/29/1998 Providing information in the fields of investment and finance over
6 computer networks and global communication networks.
7
2,201,105 11/3/1998 Providing information in a wide variety of non-music related fields
8 over computer networks and global communication networks;
providing general reference information over computer networks and
9 global communication networks; providing information concerning
parenting and children’s health, nutrition, and well being over
10 computer networks and global communication networks; providing
11 information concerning computers and computer software over
computer networks and global communication networks; providing
12 access to computer data bases and web sites of others in various fields
by means of a global communications network; providing bulletin
13 board services and chat services by means of global communication
networks; electronic mail services.
14
2,342,096 4/18/2000 Computerized on-line retail services in the field of general
15
merchandise such as books, clothing, cars, computers, software, gifts,
16 groceries and food, toys, music, electronics, and games; providing
retail shopping information, including retailer guides, gift finders and
17 gift reminders, via a global communication network; promoting the
on-line retail shopping services of others through advertising.
18
2,352,114 5/23/2000 Providing interactive on-line computer games over computer
19
networks and global communication networks.
20
2,418,517 1/9/2001 Providing information in the fields of movies and sports via a global
21 computer network.

22 2,498,608 10/16/2001 Shirts, vests, sweatshirts, shorts, jackets, caps, coats.


23 2,565,513 4/30/2002 Toys, namely, plush toys, soft sculptured toys.
24 2,600,020 7/30/2002 [Multiple services in international classes 35, 36, 38, 39, 41, and 42.
25 See Exhibit 1 for detailed list.]

26 2,608,310 8/13/2002 Computer hardware and peripherals, namely, interface devices for
accessing global computer networks; computer operating system
27
software for real-time video games; computer software programs for
28 accessing global computer networks; computer software programs for
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 5 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 6 of 19

1
Reg. No. Reg. Date Goods and Services
2
electronic on-line browsing; computer graphical utilities programs;
3 computer software programs for video image compression and
decompression; computer software programs for word text editing;
4
and computer software programs for text management.
5
2,751,320 8/12/2003 Informational flyers, pamphlets, instructional manuals, user guides
6 and reference guides, all in the field of television and global
communication network entertainment and access and equipment
7 therefor.
8 2,792,781 12/9/2003 Computer communication services offered to television viewers,
9 namely, providing multiple-user access to a global computer
information network; electronic mail services; web messaging;
10 providing chat rooms for the transmission of messages among
internet users concerning topics of general interest, television
11 programming and related topics, entertainment, sports and news;
electronic on-line services providing a communications link to global
12 interactive networks for the transfer and transmission of messages,
13 documents, images, music, games and data.

14 See Exhibit 1. Each of the above-listed registrations for the MSN mark is valid, subsisting, and
15 incontestable under 15 U.S.C. § 1065.
16 16. The MSN mark is a famous mark, broadly recognized as a brand identifier for
17 Microsoft’s various goods and services provided under that mark.
18 17. Since at least October 18, 1983, Microsoft has used in commerce the trademark
19 and service mark WINDOWS® to promote its market-leading computer operating software as
20 well as a variety of computer services.
21 18. Since January 10, 1995, Microsoft’s WINDOWS trademark has been registered in
22 the United States Patent and Trademark Office, Registration No. 1,872,264, for computer
23 programs and manuals sold as a unit, namely, graphical operating environment programs for
24 microcomputers. See Exhibit 2. This registration is valid, subsisting, and incontestable under
25 15 U.S.C. § 1065.
26 19. Microsoft also owns the following United States Trademark Registrations for its
27 WINDOWS mark:
28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 6 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 7 of 19

1
Reg. No. Reg. Date Goods and Services
2
3 1,989,386 7/30/1996 Sound system for personal computers comprising [ circuit board,
microphone, ] [ headphones, ] computer programs for recording and
4 generating sounds [ for use therewith ] [ and manuals therefor sold as
a unit ].
5
2,005,901 10/8/1996 Publications, namely user manuals, instruction guides, reference
6 guides, newsletters, magazines, books about computer programs.
7
2,212,784 12/22/1998 Arranging and conducting trade shows featuring computers, computer
8 software and computer software related products.

9 2,463,509 6/26/2001 Mail order and on-line distributorship services featuring computer
software and publications on computer hardware and software; on-
10 line retail services featuring computer hardware, software and
publications on computer hardware and software; licensing of
11
computer software; arranging and conducting trade shows featuring
12 computers, computer software and computer software related
products.
13
2,463,510 6/26/2001 Computer services, namely providing technical support, information
14 and consultation services in the fields of computer hardware,
computer software and computer operating systems, all offered via
15 computer networks and global communications networks; computer
16 hardware and software testing services; computer services, namely
providing software updates via computer networks and global
17 communication networks; computer services, namely providing an
on-line magazine in the field of computers and computer software;
18 internet search engines services; providing online research services
for others in various fields; licensing of intellectual property.
19
20 2,463,526 6/26/2001 Providing information over computer networks and global
communication networks in the fields of entertainment, music, and
21 interactive games; education services, namely on-line tutorials in the
field of computers and computer software.
22
2,559,402 4/9/2002 Computer game programs; [ electronic game equipment, namely,
23 joysticks, electronic game equipment containing memory devices,
24 namely computer discs for communication with televisions and
computers for playing electronic games; ] computer operating
25 software for use in playing computer games.

26 2,565,965 4/30/2002 Computer programs for use in automobiles, namely, computer


27 programs for monitoring automobile performance, for mapping and
navigation, for electronic mail and wireless communications, for
28 maintaining personal directories, contact lists, address and telephone
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 7 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 8 of 19

1
Reg. No. Reg. Date Goods and Services
2
number lists; operating system programs and utilities; computer
3 programs for wallet-sized personal computers, namely, personal
information manager programs with calendars, contact information
4
files and to do lists; programs for facilitating voice, text and pen
5 input; access programs for global communication networks; computer
programs for accessing global communication networks and
6 displaying content therefrom; and computer programs for use with
hand-held computers, namely, operating system and utility programs;
7 a full line of business application programs for use with hand-held
computers.
8
9 See Exhibit 2. Each of these registrations is valid, subsisting, and incontestable under

10 15 U.S.C. § 1065.

11 20. The WINDOWS mark is a famous mark, broadly recognized as a brand identifier

12 for Microsoft’s computer software.

13 21. The Microsoft Marks, as well as others owned by Microsoft, are used in interstate

14 commerce by Microsoft in connection with the sale, offering for sale, distribution, and

15 advertising of Microsoft’s products and services. The Microsoft Marks are distinctive and

16 famous and were distinctive and famous at the time of all acts alleged herein. As a result of

17 Microsoft’s enormous investment in developing world-class products and services and

18 promoting those products and services under the Microsoft Marks, the Microsoft Marks have

19 developed extensive goodwill in the market. Accordingly, the Microsoft Marks are extremely

20 valuable and important to Microsoft.

21 IV. MICROSOFT’S INTERNET PRESENCE

22 22. Microsoft also maintains a substantial presence on the Internet. Via the Internet,

23 Microsoft advertises its products and services, transacts business with its customers, offers its

24 customers access to many of its services, and provides product support, among other things.

25 23. In order to provide its customers with easy access to its online products and

26 services, Microsoft has registered a number of Internet domain names. Many of these domain

27 names correspond to Microsoft’s trademarks and service marks. Examples of such domain

28 names are <microsoft.com> and <msn.com>.


Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 8 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 9 of 19

1 24. Each of these domain names, as well as others registered to Microsoft, resolves to

2 a Microsoft-created website that provides Microsoft’s customers with information related to

3 Microsoft’s products and services. These websites generate business and goodwill for Microsoft

4 and allow Microsoft to develop and maintain relationships with its customers.

5 V. DEFENDANTS’ UNLAWFUL ACTIONS

6 25. On information and belief, Defendants are or have been the registrants, users, or

7 owners of Internet domain names that contain or consist of Microsoft’s marks or misspellings of

8 those marks (the “Infringing Domain Names”), including but not limited to, <download-

9 msnmessenger.com> and/or <msnmessenger-downloadnow.com>. The Infringing Domain


10 Names incorporate and are confusingly similar to Microsoft’s marks. The Infringing Domain

11 Names do not resolve to websites owned or endorsed by Microsoft. Rather, they resolve or at

12 one time resolved to websites registered and controlled by one or more Defendants (the

13 “Infringing Websites”).

14 26. The Infringing Domain Names are likely to lead consumers to mistakenly believe

15 that the websites reached through those domain names are affiliated with or sponsored or

16 approved by Microsoft. Defendants’ websites have exploited this confusion by conspicuously

17 displaying Microsoft’s MSN trademark.

18 27. The Infringing Websites include or at one time included advertisements for

19 emoticon related products. The domain name and the Microsoft trademarks on the Infringing
20 Websites are further likely to cause consumers to mistakenly believe that the emoticon-related

21 products are affiliated with or sponsored or approved by Microsoft. Indeed, some of the

22 websites brazenly claim that these products are a “bonus feature” of Microsoft’s messenger

23 products.

24 28. The Infringing Websites prominently offer visitors a link to “download” MSN

25 Messenger. But the “download” links do not start a download of the MSN Messenger software.

26 Instead, the visitor is automatically redirected to one or more other websites controlled by

27 Defendants and/or Smiley Central where that user is solicited to download and install emoticon

28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 9 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 10 of 19

1 products which are not affiliated with, sponsored by, or approved by Microsoft in any way. A

2 printout of <smileycentral.com> is attached as Exhibit 3.

3 29. Consumers are likely to download the Smiley Central toolbar and emoticons

4 because they mistakenly believe that they are downloading a product produced by or authorized

5 by Microsoft. These consumers are diverted from the Microsoft website or software they are

6 seeking and Microsoft accordingly loses an opportunity to interact with them.

7 30. On information and belief, Defendants use the Infringing Domain Names to profit

8 in bad faith from the Microsoft Marks by using the marks to drive traffic to their websites.

9 31. On information and belief, Defendants registered, control, use, or own the
10 Infringing Domain Names. On further information and belief, Defendants receive a payment

11 each time a website visitor clicks on one of the advertisements or hyperlinks that appears on that

12 website and/or downloads or installs a product such as the Smiley Central toolbar.

13 32. Defendants are not affiliated with, or sponsored or approved by, Microsoft and

14 have not been authorized by Plaintiff to use the Microsoft Marks. Defendants have not now or

15 ever been authorized by Plaintiff to use or register any name or mark that includes the Microsoft

16 Marks.

17 33. Defendants’ registration, trafficking, and/or use of the Infringing Domain Names

18 is primarily to capitalize on the goodwill associated with the Microsoft Marks.

19 34. In addition to registering and using their own Infringing Domain Names, the
20 Named Defendants have actively and intentionally induced others (“Doe Defendants” or

21 “Induced Persons”) to profit in bad faith from and to capitalize on the goodwill associated with

22 the Microsoft Marks by following a similar methodology of registering and using numerous

23 other domain names that contain or consist of Microsoft’s marks. Named Defendants even

24 showed or otherwise provided Induced Persons a model or example of deceptive website content

25 likely to cause consumers to mistakenly believe that the emoticon-related products are part of

26 Microsoft’s messenger programs or otherwise affiliated with or sponsored or approved by

27 Microsoft.

28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 10 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 11 of 19

1 35. On information and belief, the Named Defendants communicated with tens of

2 thousands of persons to whom they provided information via Named Defendants’ own website(s)

3 showing how Microsoft marks could be misleadingly used both in domain names and on

4 websites to deceive consumers into thinking they could or were downloading MSN Messenger

5 when in fact they would be directed to download the Smiley Toolbar. But Named Defendants

6 went even further than providing instruction by suggesting content for how to misleadingly use

7 Microsoft marks. Named Defendants also provided a ready method for Induced Persons to

8 implement such a scheme. Named Defendants provided a link on their website to Neverblue, an

9 internet company through which Induced Persons could direct confused consumers to the Smiley
10 Toolbar and then be paid through Neverblue for doing so. On information and belief, Named

11 Defendants were paid by Neverblue for each person who Named Defendants referred to and who

12 signed up and did business with Neverblue.

13 36. On information and belief, Named Defendants also sold an internet advertising

14 product called the Magic Bullet System that incorporated specific software that would enable

15 persons to easily create landing pages on their own websites that incorporated Microsoft marks.

16 Indeed, in promoting their Magic Bullet System, Named Defendants produced a video narrated

17 by Defendant Shah specifically showing how the Magic Bullet System could be used to set up a

18 marketing campaign using Microsoft marks to sell the Smiley emoticons.

19 37. In that video, the Named Defendants’ “Messenger Update” campaign was
20 described by Defendant Shah as one that “looks like I’m promoting something related to

21 Messenger.” The video then showed a landing page at <download-msnmessenger.com> titled

22 “Download MSN Messenger” and “100% Free Download” and contained content “all about

23 MSN Messenger.” Users were then instructed to create several tabs, such as “About MSN

24 Messenger,” with “a pitch on every one.” According to the video, one or more pages within the

25 <download-msnmessenger.com> website, such as the page that appeared when a visitor clicks on

26 the “About MSN Messenger” tab, should have “a big download button [that] says Download

27 MSN Messenger.” Placing a large download button at the top of the page is important because

28 visitors’ “first instinct is to click this button.” When the button is clicked, visitors are directed to
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 11 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 12 of 19

1 Smiley Central and $3.50 per download of the toolbar is paid to the Defendant from whose

2 website the download button was clicked and/or intermediate services.

3 38. Another video instructed Induced Persons on how to create campaigns with the

4 Magic Bullet software. This process included entering a site url such as <msnmessenger-

5 downloadnow.com>, selecting ad-words, and using the blog and landing page builder to create a

6 landing page. The Named Defendants also instructed Induced Persons to include a blog title,

7 such as “Download MSN Messenger,” and a description, such as “100% Free MSN and Smiley

8 Downloads.” Because Induced Persons created landing pages using the Magic Bullet software’s

9 provided content and pre-defined templates or by otherwise copying from Named Defendants’
10 Infringing Websites, the resulting websites were and are similar in appearance to the Named

11 Defendants’ Infringing Website(s), and also infringe Microsoft’s marks. Indeed, the Magic

12 Bullet software includes “the same exact theme that we used for the Smiley campaign.”

13 39. On further information and belief, Named Defendants received $3,000 from each

14 purchaser of the Magic Bullet system. On further information and belief, Named Defendants

15 generated over $5 Million in revenue in 2009 following their methodology incorporated into

16 their Magic Bullet system.

17 40. On information and belief, Named Defendants market technologies such as

18 Revenue Logic and Magic Bullet, which allow users to “leverage [their] campaigns against

19 competitors, increase [their] reach and conversions across different verticals, and maximize both
20 [their] sales stream and revenue.”

21 41. On information and belief, the Named Defendants intentionally induced others to

22 unlawfully use Microsoft’s marks in domain names and in an infringing or diluting manner on

23 websites. Based on information and belief, a large number of infringing and diluting domains

24 and websites were created as a result of the Named Defendants’ encouragement, including but

25 not necessarily limited to the following:

26
27
28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 12 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 13 of 19

1
download-free-msn-messenger.com msn-download-messenger.com
2
downloadlivemsnmessenger.com msn-download-messengertoday.com
3
downloadmsnlivemessenger.com msn-freedownloads.com
4
download-msn-live-messenger.com msn-livemessenger.com
5
download-msnmessenger.com msn-live-messenger-download.com
6
7 downloadmsn-messenger.com msn-messenger.com

8 download-msn-messenger.info msnmessenger-2010.com

9 downloadmsnmessenger.net msnmessenger9.info

10 download-msnmessenger.net msnmessengerdl.com
11 downloadmsn-messenger.net msnmessengerdownload.biz
12
download-msn-messenger.net msn-messengerdownload.com
13
downloadmsnmessenger.org msnmessenger-download.net
14
download-msnmessenger.tk msnmessengerdownload.org
15
download-msn-messenger-for-free.com msnmessenger-downloader.com
16
downloadmsnmessengerfree.com msnmessenger-downloadfree.com
17
18 download-msnmessenger-free.com msn-messenger-downloadfree.com

19 download-msnmessenger-msn.com msnmessenger-downloadnow.com

20 download-msnmessenger-now.com msnmessengerdownloads.com

21 download-msn-messenger-now.com msnmessengerdownloads.com
22 download-msnmessengerr.com msnmessenger-downloads.com
23 downloadwindowsmessenger.com msn-messenger-downloads.net
24
downloadwindowsmessengerfree.com msnmessenger-free.com
25
downloan-msn-messenger.com msn-messenger-free.com
26
easy-download-msn-messenger.com msnmessengerfreedownload.com
27
freedownloadmsnmessenger.net msnmessenger-freedownload.com
28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 13 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 14 of 19

1
freedownloadmsnmessenger85.com msn-messenger-free-download.com
2
freemsnmessengerdownload.com msnmessengerinstall.com
3
free-msnmessenger-download.com msnmessengers-download.com
4
get-free-msn-messenger.com msnwebmessenger.org
5
getmsnmessenger.com msn-windowsmessenger.com
6
7 get-msn-messenger.net msn-windows-messenger.com

8 installmsn-messenger.com officialmsnmessenger.com

9 messengerdownload-msn.com windowslivemessengerfree.com

10 msndownloadmessenger.com
11
FIRST CLAIM FOR RELIEF
12 (Cybersquatting and Contributory Cybersquatting under the Anti-Cybersquatting
Consumer Protection Act –15 U.S.C. § 1125(d))
13
14 42. Microsoft realleges and incorporates by this reference each and every allegation

15 set forth in paragraphs 1 through 41 above.

16 43. The Microsoft Marks were distinctive at the time Defendants registered the

17 Infringing Domain Names and Induced Persons registered their infringing domain names and

18 remain distinctive today.

19 44. The Microsoft Marks were famous at the time Defendants registered the

20 Infringing Domain Names and Induced Persons registered their infringing domain names and

21 remain famous today.

22 45. Defendants’ Infringing Domain Names and the domain names registered by

23 Induced Persons are identical or confusingly similar to or dilutive of the Microsoft Marks at the

24 time Defendants registered their Infringing Domain Names and Induced Persons registered their

25 domain names, and remain so today.

26 46. Defendants have registered, trafficked in, and/or used the Infringing Domain

27 Names with bad faith intent to profit from the Microsoft Marks, and Named Defendants induced

28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 14 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 15 of 19

1 the Induced Persons to register and use in bad faith infringing domain names with the knowledge

2 the Induced Persons would profit in bad faith from their use of the Microsoft Marks.

3 47. As a result of their wrongful conduct, Defendants are liable to Microsoft for

4 violations of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).

5 SECOND CLAIM FOR RELIEF


(Trademark and Contributory Trademark Infringement Under the Lanham Act – 15
6
U.S.C. § 1114)
7
48. Microsoft realleges and incorporates by this reference each and every allegation
8
set forth in paragraphs 1 through 47 above.
9
49. Defendants have used and Named Defendants have intentionally induced others to
10
use the Microsoft Marks in interstate commerce.
11
50. Defendants’ use of the Microsoft Marks and Named Defendants’ intentional
12
inducement of others to use the Microsoft Marks is likely to cause confusion, or to cause
13
mistake, or to deceive.
14
51. Defendants’ wrongful and unauthorized use and Named Defendants’ inducement
15
of others’ wrongful and unauthorized use of the Microsoft Marks and counterfeits of the
16
Microsoft Marks to promote, market, or sell products and services constitutes trademark
17
infringement pursuant to 15 U.S.C. § 1114 et seq.
18
THIRD CLAIM FOR RELIEF
19
(False Designation and Contributory False Designation of Origin Under the Lanham Act –
20 15 U.S.C. § 1125(a))

21 52. Microsoft realleges and incorporates by this reference each and every allegation
22 set forth in paragraphs 1 through 51 above.
23 53. Defendants’ and Induced Persons’ use of the Microsoft Marks in connection with
24 goods or services in commerce are likely to cause confusion, or to cause mistake, or to deceive
25 as to the affiliation, connection, or association of Defendants or Induced Persons with Microsoft,
26 or as to the origin, sponsorship, or approval of Defendants’ or Induced Persons’ goods, services,
27 or commercial activities with Microsoft.
28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 15 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 16 of 19

1 54. As a result of their wrongful conduct, Defendants are liable to Microsoft for

2 violation of 15 U.S.C. § 1125(a).

3 FOURTH CLAIM FOR RELIEF


(Dilution and Contributory Dilution Under the Lanham Act – 15 U.S.C. § 1125(c))
4
5 55. Microsoft realleges and incorporates by this reference each and every allegation
6 set forth in paragraphs 1 through 54 above.
7 56. Defendants’ or Induced Persons’ use of one or more of the Microsoft Marks in
8 commerce commenced after such marks became famous within the meaning of 15 U.S.C. §
9 1125(c).
10 57. Defendants’ or Induced Person’s use of the Microsoft Marks in commerce is
11 likely to cause dilution by blurring or dilution by tarnishment of the Microsoft Marks.
12 58. Upon information and belief, Defendants willfully intended to trade on the
13 recognition of the Microsoft Marks and Named Defendants to have Induced Persons trade on the
14 recognition of the Microsoft Marks.
15 59. As a result of their wrongful conduct, Defendants are liable to Microsoft for
16 violation of 15 U.S.C. § 1125(c).
17 FIFTH CLAIM FOR RELIEF
18 (Unfair Business Practices - RCW § 19.86 et seq.)

19 60. Microsoft realleges and incorporates by this reference each and every allegation
20 set forth in paragraphs 1 through 59 above.
21 61. Defendants’ use of the Microsoft Marks to promote, market, or sell products and
22 services constitutes an unfair business practice pursuant to RCW § 19.86 et seq. Defendants’ use
23 of the Microsoft Marks is an unfair or deceptive practice occurring in trade or commerce that
24 impacts the public interest and has caused injury to Microsoft.
25 62. Defendants’ actions violate RCW Ch. 19.86 et seq.
26
27
28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 16 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 17 of 19

1 SIXTH CLAIM FOR RELIEF


(Washington Common Law Unfair Competition)
2
3 63. Microsoft realleges and incorporates by this reference each and every allegation

4 set forth in paragraphs 1 through 62 above.

5 64. Defendants’ use of the Microsoft Marks has infringed on their distinctive features

6 in a manner that tends to confuse, in the public mind, Microsoft’s products and/or advertising

7 with the products and/or advertising of others.

8 65. The acts of Defendants complained of herein constitute unfair competition in

9 violation of Washington common law.

10 SEVENTH CLAIM FOR RELIEF


(Washington Common Law Unjust Enrichment)
11
12 66. Microsoft realleges and incorporates by this reference each and every allegation

13 set forth in paragraphs 1 through 65 above.

14 67. The acts of Defendants complained of herein constitute unjust enrichment of

15 Defendants at Microsoft’s expense in violation of Washington common law.

16 VI. PRAYER FOR RELIEF


17 WHEREFORE, Microsoft respectfully requests that the Court enter judgment against

18 Defendants as follows:

19 1. That the Court issue temporary and permanent injunctive relief against

20 Defendants, and that Defendants, their officers, agents, representatives, servants, employees,

21 attorneys, successors and assignees, and all others in active concert or participation with

22 Defendants, be enjoined and restrained from:

23 a) infringing Microsoft’s trademarks and service marks;

24 b) using Microsoft’s trade names, trademarks, or service marks, or any

25 version thereof, in connection with the description, marketing, promotion,

26 advertising, or sale of products or services not associated with or approved

27 by Microsoft;

28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 17 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 18 of 19

1 c) registering, using, or trafficking any domain names that are identical or

2 confusingly similar to Microsoft’s marks, including but not limited to

3 domain names containing Microsoft’s marks and domain names

4 containing misspellings of Microsoft’s marks; and

5 d) assisting, aiding, or abetting any other person or business entity in

6 engaging in or performing any of the activities referred to in

7 subparagraphs a) through c) above.

8 2. That the Court order the forfeiture or cancellation of the Infringing Domain

9 Names or the transfer of the Infringing Domain Names to Microsoft;


10 3. That the Court award Microsoft all damages caused by Defendants’ unlawful acts;

11 4. That the Court award Microsoft treble damages as provided by law;

12 5. That the Court award Microsoft all gains, profits, and advantages derived by

13 Defendants from their unlawful acts;

14 6. That the Court award Microsoft treble the gains, profits, and advantages derived

15 by Defendants from their unlawful acts;

16 7. That the Court award Microsoft statutory damages of $100,000 for each of

17 Defendants’ Infringing Domain Names and each of Induced Persons’ infringing domain names;

18 8. That the Court award Microsoft its attorneys’ fees and costs incurred herein,

19 including prejudgment and post-judgment interest; and


20 9. That the Court grant Microsoft all other relief to which it is entitled and such

21 other or additional relief as is just and proper.

22 DEMAND FOR JURY TRIAL

23 Plaintiff Microsoft hereby demands a trial by jury in this action.

24 DATED August 2, 2010 Respectfully submitted,


Orrick, Herrington & Sutcliffe LLP
25
By: s/ Mark S. Parris
26 Mark Parris (Bar No. 13870)
Jeffrey Cox (Bar No. 37534)
27
Attorneys for Plaintiff
28 MICROSOFT CORPORATION
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 18 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653
Case 2:10-cv-00653-RSM Document 17 Filed 08/02/10 Page 19 of 19

1 CERTIFICATE OF SERVICE

2
3 I, Heather E. Bond, hereby certify that on August 2, 2010, I caused the foregoing to be

4 electronically file with the Clerk of the Court using the CM/ECF system, which will send

5 notification to counsel of record. In addition, I served Derek Linke at the address below via

6 Washington Legal Messengers.

7 Dated this 2nd day of August, 2010, at Seattle, Washington.

8
s/ Heather E. Bond
9 Heather E. Bond
10
11
12 Derek Linke
NEWMAN AND NEWMAN,
13 ATTORNEYS AT LAW, LLP
505 Fifth Avenue South, Suite 610
14 Seattle, Washington 98104
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Orrick Herrington & Sutcliffe LLP
FIRST AMENDED COMPLAINT FOR 701 5th Avenue, Ste. 5600
DAMAGES AND EQUITABLE RELIEF 19 Seattle, WA 98104-7097
tel: +1-206-839-4300
CASE NO. 10-CV-00653